A recent opinion by the Commission highlights the risk for defaulting at the ITC. The Commission reversed the ALJ’s finding of a violation as to the participating respondents but maintained that the defaulting respondent was...more
Since their inception as part of the AIA, inter partes reviews (IPRs) have been a favorite tool in the arsenal of patent challengers. Their statutorily mandated 18-month schedule oftentimes allows the PTAB to resolve a...more
10/3/2019
/ §314(a) ,
Administrative Law Judge (ALJ) ,
America Invents Act ,
Claim Construction ,
Evidentiary Standards ,
Final Written Decisions ,
International Trade Commission (ITC) ,
Parallel Proceedings ,
Patent Cancellation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Prior Art
The Situation: The Senate is considering legislation to abrogate the Supreme Court's decision in Alice v. CLS and related case law, potentially nullifying more than 100-years of Supreme Court jurisprudence.
The...more
Shortly before the evidentiary hearing, ALJ Lord granted Complainant’s motion in limine and excluded certain testimony in the witness statement of Respondents’ expert as precluded by her ground rules governing expert...more
6/24/2019
/ Administrative Law Judge (ALJ) ,
Computer-Related Inventions ,
Discovery ,
Evidentiary Hearings ,
Expert Testimony ,
Expert Witness ,
International Trade Commission (ITC) ,
Patents ,
Prior Art ,
Section 337 ,
Testimony ,
Written Descriptions
In a long-awaited decision, a split panel of the Federal Circuit confirmed on May 1, 2019, that the Court has jurisdiction to review the ITC’s decision not to institute an investigation. Amarin Pharma, Inc. v. Int’l Trade...more
The ITC issued a final determination in a long-running dispute between Sony and Fujifilm. Certain Magnetic Tape Cartridges And Components Thereof, Inv. No. 337-TA-1058, Notice Of A Commission Final Determination (March 25,...more
In a recent Order, ALJ Bullock granted Respondents’ motion in limine to exclude a published article written by a former district court judge who previously served as Complainant’s economic expert. In re Certain Memory Modules...more
While it is well understood that the ITC can issue an exclusion order to stop the importation of articles found to infringe a patent, it is not as well known that such orders can also prevent certain domestic activities. A...more
2/15/2019
/ Administrative Law Judge (ALJ) ,
Cease and Desist Orders ,
Corporate Counsel ,
Evidence ,
Exclusion Orders ,
Imports ,
International Trade Commission (ITC) ,
Patent Infringement ,
Patents ,
Remedies ,
Section 337
In a recent opinion, the Court of International Trade granted a request for preliminary injunction to One World Technologies (“One World”). One World Techs., Inc. v. United States, No. 18-00200, 2018 WL 7049792 (Ct. Int’l...more
In a recent decision, the ITC rejected respondent’s argument that complainant did not meet its domestic industry (“DI”) requirements because of declining investments over the years leading up to the Complaint. In re Certain...more
In a recent order, Administrative Law Judge Shaw denied in part the Respondents’ Motion to Supplement their Notice of Prior Art. In re Certain Strontium-Rubidium Radioisotope Infusion Systems, And Components Thereof Including...more
Administrative Law Judge Lord held the economic prong can be satisfied even when the percentage of complainant’s domestic investments in the patented products is small in relation to its overall domestic investments. In re...more
In a recent decision, the Commission overruled the ALJ to clarify, and ultimately expand, the universe of investments that complainants can use to meet the economic prong of the domestic industry (“DI”) requirement. Certain...more
8/6/2018
/ Administrative Law Judge (ALJ) ,
Corporate Counsel ,
Domestic Industry Requirement ,
Initial Determination (ID) ,
International Trade Commission (ITC) ,
Investment ,
Manufacturers ,
Patent Infringement ,
Patents ,
Research and Development ,
Section 337
The ITC recently modified a previously issued remedial order such that certain of the Respondents’ redesigned products were not covered by the limited exclusion order (LEO) or the cease and desist order (CDO). Certain Network...more
7/16/2018
/ Administrative Law Judge (ALJ) ,
Cease and Desist Orders ,
Exclusion Orders ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Redesigned Products
Late last week, the International Trade Commission (“ITC”) finalized changes to its rules, which changes were first proposed in late 2015. The new rules are expected to be published in the Federal Register in early May 2018...more
5/3/2018
/ Administrative Law Judge (ALJ) ,
Corporate Counsel ,
Expedited Discovery ,
Federal Pilot Programs ,
Federal Register ,
Federal Rules of Civil Procedure ,
Intellectual Property Protection ,
International Trade Commission (ITC) ,
New Rules ,
Patents ,
Proposed Regulation ,
Rulemaking Process ,
Rules of Practice ,
Section 337 ,
Young Lawyers
In a recent order, the Commission again declined to institute an Early Disposition Pilot Program (100-day Pilot Program), this time citing the complexity of the issues raised in the request. In the Matter of Certain...more
Since their introduction as part of the America Invents Act, Inter Partes Reviews (IPRs) have proven to be a powerful tool for parties accused on patent infringement. One important constraint on their deployment is a one year...more
In a unanimous opinion issued on February 14, 2017, a three-judge panel of the Federal Circuit vacated the Board’s obviousness determination in Apple’s inter partes review against PersonalWeb and remanded for further...more